Thursday, November 16, 2006

TTAB Affirms 2(d) Refusal of "VOODOO TIKI" for Tequila

Applicant John Taddeo could have used a bit of magic in his attempt to register the mark VOODOO TIKI for tequila. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with two previously registered marks: DIXIE CRIMSON VOODOO ALE for beer [CRIMSON and ALE disclaimed], and REDRUM VOODOO SPICED RUM for "distilled spirits, flavored rum" [SPICED RUM disclaimed]. In re Taddeo, Serial No. 76508763 (October 19, 2006) [not citable].

Starting with the second du Pont factor, the similarity of the goods, the Board found Applicant's tequila to be related to the beer of the first registration, and to be encompassed within the "distilled spirits" of the second registration. Moreover, third-party registrations suggested that beer and rum are related, and Internet evidence indicated that beer and tequila are "complementary goods which can be used together as ingredients in mixed drinks."

As to the third du Pont factor, the similarity of trade channels, the Board not surprisingly found that the involved goods "are or could be marketed in the same trade channels and to the same classes of purchasers."

Under the fourth du Pont factor, the involved products are ordinary consumer goods that are purchased by ordinary consumers without any special care or sophistication.

As to the sixth du Pont factor, the Board ruled that 15 third-party registrations for marks including the word VOODOO were not probative of the strength or weakness of VOODOO as a mark for alcoholic beverage because they concerned goods and services far afield. Internet evidence describing numerous mixed drinks with VOODOO in their names did not prove trademark use of the names. In sum, the Board "certainly cannot conclude that the use of VOODOO in marks for alcoholic beverages is so widespread that purchasers have become conditioned to distinguish such marks by looking at their other elements."

Finally, the Board turned to the first du Pont factor, the similarity of the marks. It concluded that VOODOO is "the dominant feature in the commercial impression created by each of the cited registered marks." Applicant Taddeo acknowledged that DIXIE refers to the southern states, CRIMSON ALE describes the color and nature of the goods, REDRUM describes the color of the goods, and SPICED RUM describes the flavor and nature of the goods. But the Board observed that VOODOO "is an arbitrary term, or at most a slightly suggestive term."

Taddeo argued that VOODOO is a "highly suggestive term" because it connotes "black magic, conjuring and witchcraft," and that "when this term is used in connection with alcoholic beverages, it is used to suggest magical properties or effects." The Board was not swayed: "beer and rum (and tequila) cannot readily be said to have 'magical properties or effects" except in the most fanciful sense." The connotation suggested by Applicant "is so tenuous as applied to alcoholic beverages that the term cannot be considered ... only slightly and whimsically suggestive of such goods."

Comparing the marks, the Board found that "the basic similarity in the respective marks' overall commercial impressions which results from the presence of the term VOODOO in each mark outweighs these points of dissimilarity in the marks."

Applicant Taddeo argued that the two cited marks "are more similar to each other than either is to applicant's mark VOODOO TIKI, and that if the two cited marks can coexist on the register, applicant's mark likewise should be registered." The Board, however, pointed out once again that "each case must be decided on its own merits and on the basis of its own record.... *** More specifically, we are not bound by the decision of the examining attorney who approved registration of the REDRUM VOODOO SPICED RUM mark notwithstanding the preexistence of the DIXIE CRIMSON VOODOO ALE registration."

To the extent that the Board had any doubts about the likelihood of confusion, it resolved those doubts (as it must in a Section 2(d) case) against Applicant.

TTABlog comment: This is another Board decision that (like some VOODOO drinks) is a bit hard to swallow. I just don't think the marks, when viewed as a whole, are confusingly similar. After all, consumers don't know what portions of marks have been disclaimed. They just look at the marks in their entirety, and the marks seem quite different to me.

Anyway, this case reminds me of the time I was watching a movie about zombies, and I turned to my friend and said, "I Haiti this kind of movie, but I'll watch if voodoo."

Text Copyright John L. Welch 2006.


Post a Comment

<< Home